TRADEMARKS FILING AND PROSECUTION IN AFGHANISTAN
A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to help consumers indentify that its products or services with which the trademark appears originate from a unique source, and to help distinguish its products or services from those of other entities.
Trademark in Afghanistan may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.[1]
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark.
| Relevant office | Afghanistan central Business Registry &Intellectual Properties Ministry of industry and commerce (ACBR-IP) |
| Nice classification | Yes |
| Paris convention | Yes |
| Madrid system | Yes |
| Multi class system | No |
| Documents required for filing a trademark application | Legalised Power of Attorney |
| Prosecution process | Filing publication of the mark in the trade mark journal opposition(within 30 days from the publication date) registration renewal |
| Registration term | 10 years from date of application |
| Renewal term | 10 years |
Trademark searches in Afghanistan
It is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in Afghanistan can be conducted for word marks, device marks, numeral and labels. An unofficial search can be conducted through the records of the registry in Afghanistan.
Trademark word search edition of Afghanistan follows the Nice Classification and trademark applications can be filed for goods in classes 1-34 and services in classes 35-45.
It is advisable to conduct comprehensive trademark clearance search in Afghanistan to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
It is not possible to conduct a search for the device.[2]
Filing trademark applications in Afghanistan
A person may file single class trademark application in Afghanistan.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary application in Afghanistan
Ordinary trademark applications filed in Afghanistan are applications without claiming any priority.
Priority trademark applications in Afghanistan/Convention trademark applications Afghanistan:
A priority trademark application may be filed in Afghanistan. A priority trademark application should be filed in Afghanistan within 6 months after the date on which the application was made in the convention country.[3]
Paris convention
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Afghanistan within six months of after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
Afghanistan follows the nice classification of classes. Afghanistan central Business Registry &Intellectual Properties Ministry of industry and commerce (ACBR-IP) uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defines list of terms and cover all the goods and services.
Trademark examination in Afghanistan
Once the application is submitted for the registration it goes through the examination stage. The central registration office shall examine the application according to the present laws and regulations and upon reviewing the application either accept or reject the application within thirty days from the receipt of the application.
The central registration office shall state the reasons for the rejection and the applicant may within 15 days have to make necessary amendments to the application and resubmit it to the central registration office or he can appeal the rejection to the local commercial court.[4]
Trademark opposition in Afghanistan
On the successful completion of the examination stage the application for the registration is accepted and published in the official gazette for the observation by the third parties. Any interested person within 30 days from the date of publication may file a notice of opposition to the central registration office. The central registration office within 15 days may furnish the applicant with copy of the opposition.
If the applicant doesn’t withdraw his/her application within 30 days from the day of receipt of the notification of the opposition, the opponent may, within 60 days lodge a complaint with the relevant commercial court. During this period the registration process will be suspended.
The concerned commercial court will hear both parties in the dispute and will make a decision accordingly in view of the reasons provided thereof.[5]
Trademark registration in Afghanistan
The application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favor of the applicant. The mark is registered for a period of 10 years from date of filing of the application and the registration certificate is issued.
[1] https://ssrana.in/global-ip/international-trademark-filing-registration/trademarks-in-united-states/
[2] https://njq-ip.com/country/afghanistan/trademarks/general-information/
[3] https://www.wipo.int/treaties/en/ip/paris/summary_paris.html
[4] https://files.njqandassociates.com/files/bf5a6895-f0e9-4996-9ead-5f30200f0b09/download?namer=long
[5] https://files.njqandassociates.com/files/bf5a6895-f0e9-4996-9ead-5f30200f0b09/download?namer=long